WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group Plc v. BTCGROUP, Henry Gonzales

Case No. D2012-2096

1. The Parties

The Complainant is The Royal Bank of Scotland Group Plc, Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services AB, Sweden.

The Respondent is BTCGROUP, Henry Gonzales, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rbstbcgroups.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2012. On October 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification sent by the Center to the Complainant on October 30, 2012 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 30, 2012.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 10, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a banking establishment incorporated in the United Kingdom.

The Complainant owns numerous verbal trademarks around the world consisting in all or in part of the acronym RBS, including in the United States of America, where the Complainant is the right holder of the verbal trademark RBS n° 3185538, that was registered on December 19, 2006 under classes 9, 16, 35 and 36 of the Nice Classification, with a priority date as of October 14, 2004.

The Complainant further holds numerous domain names consisting in all or in part of the acronym RBS, including <rbs.com> and <rbsgroup.com>.

On September 12, 2012, the Respondent registered the disputed domain name <rbstbcgroups.com>, that was originally connected to a website displaying the RBS logo as depicted on the here above mentioned Complainant’s websites, further indicating “welcome to RBS United Kingdom”.

On September 13, 2012, the Complainant, acting through its legal counsel, sent a cease and desist letter to the Respondent, drawing his attention upon its trademark rights and inviting him to transfer the domain name in the Complainant’s favor by September 22, 2012. Having not heard from the Respondent, the Complainant sent to him reminders on September 28, 2012 and October 9, 2012. The Respondent did not react.

5. Parties’ Contentions

A. Complainant

The Complainant first asserts that the disputed domain name is confusingly similar to its RBS trademarks. The addition of the suffixes “tbs” and “groups” would be insufficient to exclude such likelihood, all the more than the Complainant’s trademarks are to be considered as well-known ones.

The Complainant further affirms that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not grant him any authorization or license to register the disputed domain name. The Respondent is not an authorized dealer of the Complainant’s services and has never been into any business relationships with the Complainant. According to the Complainant, the Respondent was obviously aware of its trademarks when he registered the disputed domain name, and did it in order to defraud Complainant’s customers through a fraudulent website identical to the Complainant’s one.

The Complainant finally argues that the disputed domain name was registered and is being used in bad faith. The Respondent did not respond to the cease and desist letter sent to him on September 13, 2012, in spite of two reminders. The Respondent used the disputed domain name to engage in phishing scam, by deceiving Complainant’s customers and manipulating them into disclosing sensitive financial information. Referring to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), the Complainant further adds that the lack of any active website does not prevent the finding of bad faith. In the present case, the impossibility of conceiving a good faith use of the domain name <rbstbcgroups.com> would be indicative of bad faith. By using the disputed domain name for fraudulent purposes, the Respondent is committing a criminal offence and misleadingly diverting consumers for his own commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the holder of several registered trademarks consisting in all or in part of RBS, including in the United States of America where the Respondent is domiciled.

While the Complainant argues that the well-known character of Complainant’s RBS trademarks would have been affirmed by prior UDRP panels, this Panel noted that the precedents referred to by the Complainant do not relate to the acronym, but to the ROYAL BANK OF SCOTLAND trademarks (see The Royal Bank of Scotland Group Plc v. Christopher Graham,
WIPO Case No. D2001-0626, related to <royalbankofscotlandtenerife.com>, as well as The Royal Bank of Scotland v. Stealth Commerce,
WIPO Case No. D2002-0155, related to <royalbankscotland.com>). Prior UDRP While some of the NAF’s decisions referred to by the Complainant (The Royal Bank of Scotland Group plc and National Westminster Bank plc v. Pritpal Jittla, NAF Claim No. 660550; The Royal Bank of Scotland Group plc v. rbspayments,

NAF Claim No. 728805; The Royal Bank of Scotland Group plc, Citizens Financial Group, Inc., Churchill Insurance Co. Ltd., Hanco ATM Systems Ltd. & Privilege Insurance Co. Ltd. v. Domaincar c/o Perthshire Marketing aka Domaincar, NAF Claim No. 671079; The Royal Bank of Scotland Group plc v. Navigation Catalyst Systems, Inc., NAF Claim No. 787945; The Royal Bank of Scotland Group plc and The Royal Bank of Scotland International Limited v. Yorgi Brawn, NAF Claim No. 813065; The Royal Bank of Scotland Group plc v. Caribbean Online International Ltd., NAF Claim No. 849147; The Royal Bank of Scotland Group plc v. Domain Discreet c/o ATTN: rbs-edinburgh.com, NAF Claim No. 986696; The Royal Bank of Scotland Group plc v. Teddy Jackson, NAF Claim No. 992134; The Royal Bank of Scotland Group plc v. Jim Bowen, NAF Claim No. 1045991; The Royal Bank of Scotland Group plc v. Ramzi Takch, NAF Claim No. 1106036; The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin, NAF Claim No. 1128875; The Royal Bank of Scotland Group plc v. UBA c/o ICB011857 ICB011857, NAF Claim No. 1189004 and The Royal Bank of Scotland Group plc v. N/A c/o Bryan I., NAF Claim No. 1199346 refer to the <RBS> trademarks, none of them expressly asserts that the acronym would amount to a well-known trademark. Further panels have however held that the RBS trademark itself amounted to a well-known trademark, based upon the evidence submitted in these UDRP prior cases (see The Royal Bank of Scotland Group plc v. Reserved Bench of Strategic Geographers / Domain ID Shield Service,
WIPO Case No. D2012-1733). As a result, the Panel is willing to accept the well-known character of the RBS trademark.

This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name. While such is the case here, the issue consists of finding out whether the addition of the terms “tbc” and “groups” suffice to exclude such a likelihood of confusion. Such certainly is not the case of the term groups, which appears to be merely descriptive. The question however appears to be trickier with regards to the term ”tbc”, but should be solved in the negative in the Panel’s opinion for the following reasons:

Considering the acknowledged well-known character of the RBS trademarks under these UDRP proceedings, one has to consider that RBS is the prevailing element of the domain name which, as any well-known trademark, will stick to users’ minds, all the more than it stands in the beginning of the disputed domain name.

This Panel opinion is enhanced by the content of the website at to the disputed domain name, which displays the Complainant’s logo, clearly aiming at making users believe that the domain name and related website would be affiliated to the Complainant. While some panels have held that “The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith)” (paragraph 1.2 of WIPO Overview 2.0), this statement make it clear that this should not be considered as an absolute rule, and that exceptions may be justified on certain grounds. The Panel believes that, in this specific case of fraudulent activities such as phishing scams, such grounds do exist, and that the content of the website should be taken into account to appraise the likelihood of confusion, as such content is highly relevant in the overall impression surrounding the domain name, its registration and use.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview 2.0).

In the present case the Complainant is the owner of numerous RBS trademarks. The Complainant has no business or other relationships with the Respondent.

As a result, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

Consequently, it was up to the Respondent to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements (paragraph 4(c) of the Policy):

(i) Before any notice to it of the dispute, he used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) The Respondent is commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the case at hand, the Respondent did not respond to the Complainant’s allegations and therefore did not rebut the Complainant’s prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Typically, bad faith requires the Respondent to be aware of the Complainant’s trademarks. In the present case, there is no doubt in this Panel’s view that the Respondent was fully aware of the Complainant’s trademarks when he registered the disputed domain name, as evidenced by the fact that the website at the disputed domain name depicted the Complainant’s logo and mentioned “welcome to RBS United Kingdom”.

Considering the overall circumstances, the Panel cannot see how the disputed domain name could be used in good faith. While there is no actual evidence of phishing activities carried out through the website attached to the domain name, there is little doubt in the Panel’s opinion that the disputed domain name was registered with the intent of using it with a phishing scam. The website attached to the disputed domain name tends to demonstrate that the Respondent registered it with the sole purpose of enabling the Respondent to send emails to individuals and have them mistakenly believe that they were trading with the Complainant or one of its subsidiary. The Respondent had ample opportunities to try and rebut such assumptions, but never responded to the Complainant’s cease and desist letter in spite of two reminders, and further decided not to proceed. As a result, the Respondent has to bear the consequences of the inferences that the Panel hereby draws of the overall circumstances surrounding this case.

Consequently, the Panel is of the opinion that the disputed domain name <rbstbcgroups.com> was registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rbstbcgroups.com> be transferred to the Complainant.